SDCC Wins Devastating Attorney Fee Award In Comic-Con Trademark Case

San Diego Comic-Con claims trademark on the term "comic con" in legal battle with Salt Lake Comic Con.Doug Kline

Update: 14:47 EDT: added response from FanX's/DFP Dan Farr.

Update: 14:58 EDT: added response from SDCC.

Late last year, a jury in San Diego upheld San Diego Comic-Con's trademark on the term "Comic-Con" in a hard fought legal action against the organizers of a rival event, Salt Lake City Comic Con (now FanX Salt Lake Comic Convention). However, the jury awarded only $20,000 in damages for breach of trademark, far short of the $12 million sought by SDCC. SDCC appealed, seeking reimbursement of legal fees for the case, which dragged on for more than three years due to numerous motions and filings, and the inability of the parties to reach settlement. According to case law, such fees are only awarded in "extraordinary" circumstances and very rarely in cases regarding intellectual property and trademarks.

On Thursday, after more than eight months of additional legal wrangling, a federal District Court in San Diego sided with SDCC and directed Dan Farr Productions, Daniel Farr and Bryan Brandenburg - collectively referred to as DFP in the filings - to pay $3.9 million in addition to the jury-awarded damages, including $3.7 7 million in attorney fees and $212,000 in expert witness costs. That falls somewhat short of the roughly $5 million that SDCC filed for in its motion, but is still a tidy sum relative to the revenues generated by organizations in this industry.

"[This] trademark infringement lawsuit... stands out from others based on the unreasonable manner it was litigated and thus an award of attorneys’ fees and costs to SDCC is justified," wrote District Court Judge Anthony Battaglia in a blistering 39-page opinion handed down on August 23.

Battaglia found that DFP repeatedly failed to comply with court rules in its conduct of the case in ways that caused unnecessary expense and complication, including violating confidentiality by publicizing sealed testimony through social media. Additionally, the judge cited DPS's "unreasonable manner of litigation."

"At every opportunity, DFP has repeated, re-argued, and recycled arguments already briefed by both parties and analyzed and ruled on by the Court. This type of wasteful litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this Court to squander already limited judicial resources," wrote Battaglia. Elsewhere, the judge referred to DFP's "head in the sand litigation strategies" that "resembled a broken record," and condemned the defense for "miconduct during the trial" in presenting arguments intended to bias the jury on the basis of extraneous circumstances (e.g., SDCC's financial health, which is out of bounds) and repeating arguments that were "legally groundless."

The vehemence of the judge's rejection of DFP's legal tactics and strategy not only sends a strong message to the losing side in this dispute, it also puts teeth in SDCC's action to enforce the trademark in the first place. Now that a jury has upheld the trademark in federal court and the defendants have been subjected to significant financial penalties, there is strong precedent for action against other infringers.

Several of North America's largest fan events trade under the name "Comic Con," including New York Comic Con and Emerald City Comic Con (both run by ReedPOP, a division of Reed Exhibitions), ACE Comic Con (regional shows run by Ace Universe), Denver Comic Con (independent non-profit) and Rose City Comic Con (Left Field Media, [disclosure: with whom I have done business]). It is unclear what, if any, relationship these entities have with Comic Con International, the non-profit that puts on SDCC, although some of them may have license to use the term. [update: spokesman for SDCC confirms Left Field Media has licensed "comic con" for Rose City]. US trademarks upheld in American courts do not apply overseas unless they have also been granted in other countries.

"We do not expect a $4 million attorney fee award predicated on a $20,000 jury verdict to survive appellate review," said DFP's Dan Farr in a prepared statement. "We have instructed our attorneys to begin working on an appeal to the Ninth Circuit—while we prepare for what we expect to be our best event ever, starting September 6."

Comic-Con International also issued the following statement in response to the ruling: "San Diego Comic Convention has used the Comic-Con brand in connection with our comics and popular arts conventions for almost 50 years. We have invested substantial time, talent and resources in the brand resulting in world-wide recognition of the Comic-Con convention held annually in San Diego. We have always preferred, and continue to prefer, resolving disputes outside of court, but the Defendants’ conduct made that impossible in this case.

"We are grateful to the jury that found in our favor and the Court that upheld the jury verdict. While we are obviously pleased with the final outcome, we must double our efforts to do what is our primary objective; to celebrate the historic and ongoing contribution of comics and related popular artforms to art and culture. We will do this through our conventions Comic-Con in San Diego, WonderCon in Anaheim and, soon, the new Comic-Con Museum in Balboa Park, San Diego."

FanX Salt Lake Comic Convention (previously Salt Lake City Comic Con, the subject of the initial litigation) , the flagship event run by DFP, is scheduled to take place September 6-8 in Salt Lake City, Utah.